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Protection of Intellectual Property

The world economy is increasingly driven by intellectual capital: knowledge, inventions, expression of creativity and the accumulation, training and skills embodied in the scientific, engineering and professional workforce. Unlike physical capital, intellectual capital is highly mobile and circulates the globe with even greater ease since the arrival of digital networks, and in particular the internet.

The physical border, the old container, the national economy and national cultural homogeneity is increasing less apt to serve as an organizing concept for regulating the rights and obligations that attach to the flow of intellectual capital on the borderless and multifunctional medium of digital networks.

The growing integration of global society in the many parts of the world is a fact. Thus the business manager increasingly thinks in terms of the international market for goods and services. Capital moves around the world in the greatest haste, seeking its highest return. Information flows with rather limited regard for national boundaries. Digital and networking technology enable all forms of information, whether text, sound or image to be reduced to binary code and to be transmitted on the internet to any point on the globe almost instantaneously.

Based on the above, international rules and institutions that seek to regulate this integrated globe are rapidly evolving to cope with change. Nowhere is this evolution occurring more rapidly than in the field of regulation of Intellectual Property rights.

As a matter of fact, goods and services move more freely and quickly throughout an increasingly integrated global economy, producers and distributors need to assure that the creative or innovative elements of goods and services, and the elements that give these goods and services their unique character and, thus, their competitive advantage, are protected against misappropriation. In the words of Frederick Abbott, Thomas Cottiers and Francis Gurry, the absence of effective protection of intellectual property in many parts of the world in essence amounts to new types of trade barriers. Indeed, the reduction of tariffs and quantitative restrictions remains of limited effect if, at the same time, imported products may be freely copied and reproduced at considerably lower costs. The more products and services contain intellectual property rights components, the more such barriers have effects on international trade.

The increasing demand for intellectual property rights protection led to the negotiation of major new international intellectual property rights protection agreement in the GATT now World Trade Organization (WTO). The agreement on Trade Related Aspects of Intellectual Property Rights (TRIPSs Agreement) that entered into force on January 01, 1995 adds important texture to the International Intellectual Property Rights landscape. This includes the prescription of minimum levels of substantive IPRs protection for all WTO member countries, a requirement of providing adequate enforcement mechanisms (including judicial processes), and the potential for authorization of trade sanction against a member that fails to implement the requirements.

Nonetheless the TRIPS Agreement is the latest step in a trend toward an integrated global system for the protection of IPRs that began to take concrete shape in the late 1800s with the conclusion of the Paris Convention for the Protection of Industrial Property (1883) and the Berne Convention for the protection of Literary and Artistic Works (1886) With respect to the international intellectual property rights system one cannot say that there is a single integrated global mechanism for the protection of IPRs. International IPRs protection remains grounded in the national legal systems of each country, and to a certain extent in the legal systems of integrated regions such as the African Intellectual Property Organization known by its French acronym OAPI. Notwithstanding, important strides have been made effectively achieving a truly global framework. Various Conventions administered by the World Intellectual Property Organization (WIPO) and WTO provide a broad multilateral framework of IPRs protection on a multilateral basis, most notably the Patent Cooperation Treaty (PCT) mechanism and the Madrid Agreement concerning the International Registration of Marks administered by WIPO and there is a proliferation of such mechanisms at the regional level. While the European Patent Organization increasingly provides the IPRs protection framework for Europe, the African Intellectual property organization (OAPI) which is made up of sixteen (16) member States. The law within this regional organization is guarded by the Agreement Revising the Bangui Agreement of March 02, 1977 on the creation of an African intellectual property organization signed at Bangui on February 24, 1999. The annexes to this Agreement contain respectively, the provision to be applied in each member State concerning:

  • Patents (Annex I)
  • Utility models (Annex II)
  • Trademarks and services marks (Annex III)
  • Industrial designs (Annex IV)
  • Trade names (Annex V)
  • Geographical indications (Annex VI)
  • Literacy and artistic property (Annex VII)
  • Protection against unfair competition (Annex VIII)
  • Layout designs (topographies) of integrated circuits (Annex IX)
  • Plant variety protection (Annex X)
  • Protection on any of the above rights at OAPI covers all the member States to wit; Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Cote d’Ivoire, Gabon, Guinea Conakry, Guinea Bissau, Mali, Mauritania, Niger, Senegal, Togo and Equatorial Guinea.<

To attain its object clause, OAPI has its objectives and mission. While its mission on the one hand is:
  1. The issuance of protection title;
  2. Documentation and information;
  3. Promotion of technological development.

Its objectives are as follows:
  • To ensure the protection and publication of intellectual property right items;
  • To encourage creativity and transfer of technology through intellectual property rights system;
  • To render the legal framework propitious to promote investment by creating favorable conditions of the principles of intellectual property;
  • To implement effective training programmes to enable OAPI render better quality services;
  • To create conducive condition for enhancing the value of research findings and for domestic companies to make use of technological innovations.

PROTECTION OF IPRS BEFORE OAPI Generally speaking, IP is generally classified into two categories. Thus we have industrial property on the one hand and literal and artistic property on the other hand.

INTELLECTUAL PROPERTY

Industrial property Literacy & artistic property
Patents Utility models Trademarks Geographical indication Industrial designs and models Layout design of integration circuits Plant variety Trade secrets Copyright and related rights which are conferred to creation of literacy, artistic and cultural works such as music, books, motion pictures, photographic works, computer programmes, sculptures etc


SUI GENESIS FORMS OF IP PROTECTION
Folklore
Traditional knowledge

PROTECTING I.P WITHIN OAPI
1.
PATENTS.
A Patent is an exclusive right granted for the protection of an invention. The Patent provides its title holder an exclusive right to prevent others from commercially exploiting the invention for a limited period of time in return for disclosing the invention to the public.

DURATION FOR PROTECTION
. The duration for protecting a patent is usually 20 calendar years which starts running from the date of filing.

Procedures observed by OAPI from filing up to the granting of a Patent.

  • Filling an application which may be indirectly or directly.
  • Administrative examination which takes two forms:
  1. Formal examination.
  2. Substantive examination.
  • Grant/ rejection.
  • Publication if and when the Patent is granted.

FILING AN APPLICATION FOR A PATENT.
BASIC REQUIREMENTS.

  • The applicant must ensure that the invention whether of products or process must be a patentable subject matter.
  • Such inventions must be new.
  • It must have an inventive step.
  • It must be industrially applicable.

For further explanation as to the above, you can always contact Muluh & Partners, most especially applicants who wish to obtain Patents from the OAPI jurisdiction whether directly or indirectly and who have not passed through the international office for registration of a Patent (WIPO).

FORMAL REQUIREMENTS.
CONSTITUTION OF DOCUMENTS

An application (on form B101) form taken from OAPI must be filed directly or indirectly addressed to the Director General of OAPI in four copies. A stamped envelope in two copies which must contain the following:

  • A detailed description of the object of invention which is able to permit any man in that technical field to reproduce same in its exactitude without being helped.
  • Claims.
  • Drawings necessary to describe the invention.
  • An abstract.
  • Receipt showing proof of payment of OAPI’s official charges.
  • A simply signed Power of Attorney if the applicant is represented by an Attorney.
  • Where a Priority Right is claimed, documents evidencing a previous registration must be tendered. This shall be a certified copy of the Certificate of Registration that must mention the name of the applicant, application number and date, country in which an application was filed and the registration number of the earliest application.
  • If the Priority Right has just been assigned to another, there must be annexed to such application, a notarised copy of the Priority Assignment Deed.
  • If made in another language other than English or French, it must be translated into any of the working languages of OAPI which are English or French.


You can claim any Priority Right, but note that for each Priority right claimed you will pay charges to OAPI. For further information as to the OAPI official charges vis-à-vis Patent for an invention, please contact Muluh & Partners.

Charges Associated to Patent Protection.
  • Cost relating to the application fees and other official charges.
  • Cost relating to the services rendered by the Patent Attorney or agent who assists in filing for Patent protection.
  • The costs of translation especially if the Patent is in a language other than English or French.
  • Annual maintenance fees.

NB: Contact us for details on these charges.

PLACE OF EFFECTING FILING.
Direct application
- At the Service in charge of receiving application (BAR) at OAPI.
- In a box expressly previewed to this effect on public holidays, non-working days and out of working hours.
- Through a registered mail addressed to the Director General of OAPI.

Indirect application.
This can only be used if applicant resides within a member State of OAPI. In this case applicant can file through their National Administration in charge of Industrial Property of that applicant’s State (SNI).
Note:
Those who reside out of member States of OAPI can only effect their application through their intermediary who must be a Licensed Attorney, but this is optional for applicants residing in any member State of OAPI.

MAINTAINING PATENT RIGHTS.
ANNUITIES
Once a Patent has been granted, applicant or title holder can only maintain his/her rights by the payment of Annuities. Annuities are due on the anniversary date which is the filing date of the application.

Annuities not effected on the anniversary date are receivable at OAPI within six months from the date the annuities were due, subject to payment of a supplementary tax. Failure to pay annuities within a reasonable delay shall cause the Patent ipso facto to fall in the public domain. Thus the title holder forfeits all rights to the title except he/she applies for restoration within a period of delay as prescribed by the Revised Bangui Accord.
Please for all issues such as:

  • Certificate of Addition;
  • Correction before and after publication;
  • Registration of Patent in the Special Register (IRSB);
  • Restoration of Rights;
  • Enforcement of rights against infringements or any queries you may have vis-à-vis a Patent, Muluh & Partners is at your service.

2.
TRADEMARKS
A Trademark is a distinctive sign which is used or to be used to distinguish the product(s) or service(s) of a company from those of other companies.
Signs considered as a mark.
Surnames, form or container of a product, fanciful designs, labels, wrappings, emblems, stamps, seals, vignettes, borders, combinations or arrangement of colours, drawings, reliefs, letters, numbers, pseudonyms.
Signs not protected as mark within OAPI.
Olfactory signs (smells) e.g. perfumes.
Audible signs (sounds) e.g. cry of an animal, etc.

Signs which may not be validly registered.

  • Marks which are not distinctive in character.
  • Marks which are identical and confusingly similar to that of another person.
  • Signs contrary to public order, morality or the Law.
  • Signs liable to deceive the public or commercial circles in particular on the geographical origin, the nature or characteristics of the product or service considered.
  • A sign which reproduces, imitates or contains among its element coat of arms, flag, other emblems, abbreviations or acronyms or an official control and guarantee sign or stamp of a State or an inter-governmental organisation set up by an international convention, unless by authorisation of the competent authority of the State or Organisation.

Filing of Application.

  • The application must be addressed to the Director General of the Organisation in sufficient copies.
  • The document should show proof of the payment to the Organisation of the filing fees.
  • An unstamped Power of Attorney, if the applicant is represented by an agent.
  • A print of the mark including a list of goods or services to which it applies and corresponding classes of the international classification of goods and services (Nice Arrangement).
  • The number of models of the mark to be supplied shall be specified by the implementation regulations of the law.
  • If it is a collective mark, the approval of the competent authority must be produced.

Conditions for Acceptance and date of Filing.
The Organisation shall admit as the date of filing the date of receipt of the application for registration made on the prescribed form at the Ministry responsible for Industrial Property or at the Organisation, provided that at the time of receipt the application contains:

  • Indications concerning name, address, according to ordinary requirements, the nationality and the domicile of the applicant.
  • The signature; if it is a corporate body, the identity and position (capacity) of the signatory must be indicated.
  • The goods or services to which the mark in question applies.
  • Proof of payment of the filing fee.
  • In case of appointment of an agent, the applicant must make declaration thereof and indicate his name and address.

Scope of Protection of a Mark.
Registration of a mark shall only have effect for a period of ten (10) years from the date of filing of the application for registration. However, the owner of the mark may preserve same indefinitely through successive renewals every 10 years, subject to the payment of renewal fees.

  • Cost of Trademark Protection.
  • Official charges for filing.
  • Agent fees (charges for services rendered).
  • Renewal charges or maintenance fees.
  • Cost for conducting a Trademark search.

Scope of Registration.
A Trademark may be registered in one or several classes of goods or services under the terms of the Nice Agreement on the international classification of goods and services for the purpose of registration of marks.
Procedure Observed at the Trademark Office:

  • Formal examination.
  • Substantive examination.
  • Publication and opposition.
  • Registration.
  • Renewal.

3.
COMMERCIAL NAMES.
A Trade name is a distinctive sign used in commerce to differentiate between one establishment and another. Trade name means the name under which a commercial, industrial, handicraft or agricultural establishment is known and operated.

What is not considered as a Trade Name.
Name or designation which by its nature or use to which it may be put is contrary to public order and morality and which in particular could mislead commercial circles or the public as to the nature of the commercial, industrial, handicraft or agricultural establishment designated by such name shall not be considered a Trade name.

Constitution of Documents.
The application for the registration of a Trade Name must be made on the prescribed form TN 501 which must mention obligatorily:

  • The complete address, nationality and domicile of the applicant.
  • The reproduction of the Trade Name.
  • The place and nature of activities.
  • The address of the Attorney, if represented.
  • The date of the application, the signature and stamp of the applicant or Attorney. If the applicant is a moral person, the identity and capacity of the signatory has to be indicated.
  • The mode of payment of the official charges/tax and the account of the said tax.
  • A proof of payment of the prescribed charges.
  • A Power of Attorney, signed without stamp, if the applicant is represented by an Attorney.

Duration of Protection.
The duration of a Trade Name is 10 years from the date of filing an application for registration. However, the Trade Name can be conserved without limitation or duration by successive renewal after every 10 years upon payment of the renewal charges. Where a Trade Name is not renewed by its due renewal date as a result of circumstances independent of the will of the title holder, it can be a subject of restoration within a period of two years which start running from the date the renewal was due.

4.
INDUSTRIAL DESIGNS.
Definition.
Any arrangement of lines or colours shall be considered a design, and any three dimensional shape, whether or not associated with lines or colours, shall be considered a model, provided that the said arrangement or shape gives a special appearance to an industrial or craft product and may serve as a pattern for the manufacture of such a product.

If the object can at the same time be considered a new design and a patentable invention and if the elements constituting the novelty of the design are inseparable from those of the invention, the said object may only be protected under the provisions of Annex I on Patents or Annex II on Utility Models.

Industrial designs eligible for registration.
An industrial design may be registered if it is new.
An industrial design is new if it has not been disclosed anywhere in the world by publication in tangible form, by use or by any other means before the filing date or, where applicable, before the priority date of the application for registration.
The novelty referred to in paragraph (I) above shall not be denied if during the 12 months preceding the date specified in the said paragraph, the industrial design was the subject of disclosure resulting from:

  • An obvious violation in relation to the applicant or his predecessor in title; or
  • The fact that the applicant or his predecessor in title has displayed it at an official or officially recognised international exhibition.
  • Industrial design is the exploitation of which is contrary to public policy or morality may not be registered, on the understanding that the commercial exploitation of the aid designs is not considered contrary to public policy or morality merely on account of its being prohibited by a legal or regulatory provision.


Rights conferred by registration.
Any creator of an industrial design and his successors in title shall have the exclusive right to exploit the said design and to sell or cause to be sold for industrial or commercial purposes the goods in which the design is incorporated, subject to the conditions of this Annex, without prejudice to the rights conferred by other legal provisions.

Right to the industrial design.
Only designs deposited in the proper manner shall enjoy the benefits of this Annex.
The ownership of a design shall vest in the person who created it or in his successors in title, but in the absence of proof to the contrary the first applicant shall be presumed to be the creator of the design.

Acquisition of rights by foreigners. Foreigners shall enjoy the benefits of this Annex if they fulfill the conditions thereof.
Designs created by employees.
Subject to the legal provisions governing contracts for performing a certain work and employment contracts, and in the absence of contractual provisions to the contrary, the right to the registration of an industrial design made under such a contract shall belong to the person who commissioned the work or to the employer.
The same provision shall apply when an employment contract does not require the employee to exercise any creative activity, but where the employee has created the industrial design using data or means available to him on account of his employment.
In the circumstances provided for in paragraph (2) above, the employee who has created the industrial design shall have a right to remuneration reflecting the importance of the design created, which remuneration shall be fixed by the court in the absence of agreement between the parties.
The provisions of this Article shall likewise be applicable to employees of the state, public associations and any other corporate entity under public law in the absence of specific provisions to the contrary.
Where the employer expressly renounces his right to the design, that right shall belong to the creator.
The provisions of paragraph (3) are a matter of public policy.

Limitation of the rights conferred.
The registered industrial design shall not be binding on third parties who, at the time of filing of the application for registration, were already exploiting the said design on the territory of one of the member States or had taken the necessary steps with a view to exploiting it. The said third party shall be authorised to use the industrial design in his business or his own workshops or in those of other persons. That right may only be transferred with the business.

Filing of the application.
Any person wishing to have an industrial design registered shall file with the Organisation or with the Ministry responsible for industrial property, or send it by registered mail with a request for acknowledgement of receipt:
  • His application, addressed to the Director General of the Organisation in the number of copies prescribed by regulation.
  • A document proving payment of the prescribed fees to the Organisation.
  • An unstamped private Power of Attorney, if the applicant is represented by an agent.
  • A mention of the type of product for which the design is to be used.
  • On pain of invalidity of the application, a sealed package containing two identical copies of a graphic or photographic representation of the design, in dimensions specified by regulation.
  • The same filing may include from one to 100 designs, which shall be numbered from one to last, provided that they belong to the same class of the international classification (Locarno Agreement) or to the same set or range of articles. Designs additional to the hundredth shall not be considered validly deposited under this Annex.
  • At the time of filing the application may contain a request for publication of the design, once registered, to be delayed for a period not exceeding 12 months following the filing date of the application, or following the priority date thereof where priority is claimed.

5.
GEOGRAPHICAL INDICATIONS.
This means an indication that serves to identify a product as originating from a territory, a region, or a locality within that territory, in those cases where the quality, reputation or other specific characteristics of the product may be essentially attributed to such geographical origin.
Registration of a Trademark containing a geographical indication or constituted but such indication shall be refused or invalidated if the use of such indication in the trademark for such products is liable to mislead the public as to the true place of origin.
Likewise, registration of a geographical indication which although literary exact with respect to the territory, region or locality from which the products originate, shall also be refused or invalidated if it suggests to the public that the products originate from a different territory.
Natural or legal persons carrying on an activity as a producer in a geographical area specified in the application, with respect to the product specified in the application, as well as groups of such persons, groups of consumers and any competent authority shall be entitled to file an application for the registration of a geographical indication.
Any person wishing to obtain the registration of a geographical indication shall file with the Organisation or with the Ministry responsible for industrial property, or send by registered mail with a request for acknowledgement of receipt:

  • An application to the Director General of the Organisation in sufficient number of copies.
  • A document proving payment to the Organisation of the filing fee.
  • The geographical area to which the application applies.
  • The products for which the indication is used.
  • The quality, reputation or other characteristic of the products for which the indication is used.

6.
UTILITY MODELS
These are implements of work or objects to be utilised or parts of such implements or objects in so far as they are useful for the work or employment for which they are intended on account of a new configuration, a new arrangement or a new competent device, and are industrially applicable. We require the following for the application at OAPI:
- A detailed description of the invention;
- The claims;
- The drawings, if any;
- The abstract of the invention;
- The priority documents, if any;
- The assignment of priority documents, if any;
- A Power of Attorney;
- The payment of OAPI charges and our Agency fees.
The duration of protection is ten (10) years.

7.
SEARCHES.
We effect searches on all aspects of industrial property rights protected in OAPI.
- For Trademarks, verbal and figurative similarity searches are conducted against anterior marks.
- For Patents, we conduct searches to ascertain their prior existence.
Search results are delivered within 10 working days, everything being equal.

8.
RENEWALS/ANNUITY SERVICES.
As already mentioned, trademarks are protected for a period of ten (10) years, renewable as many times as possible. Thus we keep a track record of Trademark registrations and do notify our clients at least a year to the renewal dates. Upon their confirmation, we then go ahead to renew the said marks in their last year of protection to ward off penalties or risk of losing such rights.
With regard to annuity payments, we monitor and pay annuities for Patents and Utility models on behalf of applicants and owners who assign us. The main requirement for renewal is a copy of the Registration Certificate of the said Trademark on which all the vital information is inscribed.
A Power of Attorney is also needed.
With regard to annuity payments, just the proof of payment is required accompanied by a forwarding correspondence.

9.
TRADEMARK AUDITS AND VALUATION.
A Trademark as the identity of a business establishment must be well protected. Even though this is done, there still arise trademark infringements necessitating claims for damages by the aggrieved party. These damages must be reflective of the popularity of the mark. Thus as experts, we evaluate the popularity of a given mark in the OAPI region. We also audit the impact caused to owners of infringed brands especially when seizures are effected.

10.
RIGHTS ENFORCEMENT AND LITIGATIONS.
We represent clients to enforce their rights on Trademarks and Patents before OAPI and the judicial courts. This is common with cases of unfair competition. Before the local courts we initiate confiscation proceedings, obtain injunction orders and organise raids.

11.
DOMAIN NAMES REGISTRATION (.cm CCTLD).
Domain names are the identities of web sites, i.e. the names used to identify web sites.
In Cameroon, the Country Code Top Level Domain is the “.cm”. Any person resident in Cameroon or abroad can apply for a “.cm” domain name upon proving ownership or licence to use the name.
The registrations in Cameroon are done at the Cameroon Telecommunications Company (CAMTEL) against paying the requested fees and annual recurrent charges.

12.
RECORDALS IN THE SPECIAL REGISTERS.
We effect recordals on any Industrial Property rights affecting ownership, benefit of rights or change of location of the owners and applicants of the said right. Common recordals include Change of name of owners, addresses, security recordals and assignments. Justifying documents are always requested or proof of any recordal. These proofs must be notarised to uphold their authentic value.

13.
OPPOSITION AND RESTORATION.
In the OAPI region, litigation on infringement of rights usually commences with opposition. An opposition is a petition lodged at OAPI requesting that another industrial property right which infringes on yours should be annulled. Thus a trademark registration which is likely to be associated to yours can be opposed.
We prepare the opposition proceedings and seize the competent Commission at OAPI for withdrawal of the right conferred, upon payment of the necessary OAPI charges and our Agency fee and honorarium.
With regard to restoration, when owners of industrial property rights lose those rights at OAPI due to either failure to pay certain taxes (annuities), provision of certain documents, etc. we represent them in applying for and justifying the need of the restoration of the said rights within the prescribed time limits.

For more information about our Intellectual Property Department, please do not hesitate contacting us via info@muluhpartners.com or call +237 9639 4603 or +237 3342 9575

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